Appeal No. 2005-1431
Application 09/442,070
The same criticism does not, however, apply to Advanced Display, as appellants contend.
Supplemental Reply at 8. Advanced Display was a declaratory judgment action brought by
Advanced Display Systems (ADS) for a judgment of invalidity against a West patent assigned to
Kent State University (Kent), which action was consolidated with an action charging
infringement of that patent. ADS argued that the West patent is invalid for anticipation by a U.S.
patent to Hass, taking into account the subject matter incorporated by reference therein, and for
obviousness.28 The jury determined that the West patent was invalid for anticipation by the Hass
patent and for obviousness and was not infringed. 212 F.3d at 1280, 54 USPQ2d at 1678.
On appeal, Kent argued that the magistrate judge committed legal error by instructing the
jury to determine which material was incorporated by reference into the Haas patent for purposes
of anticipation. Id. at 1281, 54 USPQ2d at 1679.29 The Federal Circuit agreed with Kent,
holding that "[w]hether and to what extent material has been incorporated by reference into a
host document is a question of law," id. at 1283, 54 USPQ2d at 1680, after explaining that the
law requires a specific identification of the material which is being incorporated by reference
from the source document:
Incorporation by reference provides a method for integrating material from
various documents into a host document-a patent or printed publication in an
28 The Federal Circuit noted that during the trial, ADS never contended that the material
expressly set forth in the Hass patent alone would anticipate the West patent claims. 212 F.3d at
1284, 54 USPQ2d at 1680.
29 In view of Kent's failure to make a motion for JMOL at the close of evidence or
following the jury verdict, the Federal Circuit held it would not disturb the jury's factual
determinations. 212 F.3d at 1281, 54 USPQ2d at 1678.
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